Intellectual Property Law Questions and Answers.

SA Questions

1. What are the conditions & procedure for the registration of a trademark
2. An author is the 1st owner of the copyright work?- Elucidate with exceptions

Give a detail account of Copyright board, its constitution, powers &

functions - VVVVVVVVVVV IMP

3. What are the powers of the controller of patentee ? (OR)

How to obtain a patent? Explain the procedure - VVVVVVVVVV IMP
4. What do you understand by infringement of copyright? What are the
remedies available against the infringement of Copyright?- VVVVV IMP
5. Discuss the rights & duties of the patentee - VVVVVVVVVV IMP
6. DiscussconceptofInfringementofTrademark&howitcanbe

distinguished from passing – off? – VVVVVV IMP

Short Questions

1. MeaningofIntellectualProperty
2. Sealingofpatent
3. Honeshconcurrentuser
4. Videospiracy
5. Propertymark
6. Kindsoftrademark
7. Berne convention
8. PiracyofIndustrialdesign
9. Rightsofpatentee

10.Terms of copy right

11.Geographical indication

12.Copy right justice

Case Comments

1. Infringement of unregistered trademark 2. Paten\t of addition

3. Infringement of copyright 4. Infringement of designs
1 .What are the conditions & procedure for the
registration of a trademark
What is a Trademark ?
A trademark is a distinctive sign that identifies certain goods and services produced or
provided by a company or an individual It is used to distinguish the goods or services of
one enterprise from another.1 These trademarks are protected under the intellectual
property rights.2
Coca-cola and Pepsi are two examples of trademarks from the same industry, i.e beverages,
but are distinct.

Trademark Registration
Every business enterprise which has the job of providing particular goods or services has
its distinct identity. To protect the same distinctiveness, the intellectual property law as a
field has developed. In that, trademark is of the utmost importance. To ensure that the
particular symbol or logo or colour or shape is not similar to an already existing enterprise,
it is the duty of the person to whom it belongs to register it with the Trade Marks Registry
in the Trade Marks Register. A trademark has certain important functions.

• Firstly, it identifies the specific product or service and its source.

• Secondly, it guarantees that the goods and services will meet the standards of
quality.
• Thirdly, it will help in distinguishing one product from another which in turn
will help in the promotion and popularity of the product.
Who Can Apply For A Trademark ?
Before delving into the details of the registration of the trademark, it is essential to know
who can file for a trademark.

Section 18(1) of the Trade Marks Act of 1999, lays down the rules as to who can file an
application for a trademark.

Firstly, any person who claims to be the proprietor of the trade mark in relation to goods
or services may apply for the registration of a Trade Mark. The person who claims to be a
proprietor must be clearly identified as one. When we speak about a ‘person’, it includes
the following ,

• A Natural Person,
• A Body Incorporate,
• A Partnership Firm,
• HUF,
• Association of Persons (in case of collective Trademarks),
• Joint Proprietor
 •A Trust,
•A Society.
• A Government Authority/Undertaking
A trademark which has been applied for registration may either be already in use or it has
been proposed to be used or it is intended to be used. Lastly, the trademark is intended to
be assigned to a company that is about to be formed and registered under the Companies
Act 1956 with a view to using thereof in relation to those goods and services by the
company.6
General Rules Of Registration
The Registration of Trademark is one of the most crucial steps that have to be taken by a
business enterprise to avail protection in India. Registration under the trademarks gives
one the right to use the unique symbol which helps in distinguishing the products or
services from one’s competitor.

Apart from the specific rules of the registration of trademarks, there exists certain basic
and cardinal steps of registration which must essentially be followed. They are as follows :

1. Firstly, an application for the registration of trademark has to be filled with the
appropriate national authority, national and regional.
2. The application has to contain a clear reproduction of the sign filed for the
registration, which may include, colour , design or any other three-dimensional
features.
3. The list of goods or services to which this sign will apply also has to be included
in this application.
4. The sign should fulfill the conditions in order to be protected under trademark
law. It should be distinctive from any other signs so that, the consumers can
identify the products.
5. It is to be ensured that the signs must not be misleading or in any way deceive
the customers.
6. Lastly, the rights applied for cannot be similar to that granted to another
trademark owner. This has to be ensured by the national officials.

Conditions for Registration of Trademark in India

Chapter II of the Trade Marks Act 1999, lays down the details with regard
to the conditions of registration and the appointment of Registrars.

In India, trademarks are registered online by the Controller General of Patents, Designs
and Trademarks. The validity of the trademarks is for ten years, but it may be further
renewed from time to time in accordance to the provisions of this section.

For any registration of trademark to take place, the Registrar, shall classify the goods
and services in accordance with the International classification of goods and services
for the purposes of registration of trademarks

• Trademarks must not lack any distinctive characteristics.

 • Trademarks must not only contain indications that are used in commerce
to identify the quality, type, quantity, purpose, and values, or the
geographical source of the products or services offered.
• Also, Trademarks must not exclusively include marks or indications that
are accepted as a standard in the current language or accepted practices of
the trade.
• Trademarks must not have an appearance that deceives or confuses the
general public.
• The Trademark must not include or contain things that are likely to harm
the religious sentiments of any section or class of the population of India.
• Trademarks must not include or contain the most scandalous or sexually
explicit material.
• The trademark must not be prohibited by the Emblems and Names
(Prevention of Improper Use) Act, 1950.
• Trademarks must not be made up of marks of the shape of the goods that
originate from the characteristics of the products themselves.
• Trademarks must not consist of goods that are necessary for obtaining the
desired technical outcome.
• Trademarks must not provide an unfair competitive advantage over
another popular brand in India that is identical or very similar.

2.An author is the 1st owner of the copyright work?- Elucidate

with exceptions -

Who is the author of Copyright Work?

The person who conceives the concept and creates any literary, musical,
cinematographic file, sound recording, photography or a computer-related
work is known as author or creator. The author is the first owner of the
copyrighted work; thus, it is essential to know who is an author for work.
The term author has been defined for the various copyright works.
 1. Copyright is a sui generis right, a right which exists immediately upon
its creation. Therefore, this right is very closely associated with the
author of the work. Unlike trade mark where the person who has coined
the mark is not generally known, identified or mentioned during the
registration or enforcement action, the author plays a significant role
and finds specific mention during both registration and enforcement
action.

2. In certain kinds of work, the author is considered as the first owner of

the work, whereas in certain other kinds of work the producer of the
work is considered as the first author of the work. It is therefore
significant that there should be written assignment or other documents
in place so that copyright is properly acquired from the author of the
work.

3. The importance of pleading the identity of the author and mentioning

assignment from the author can be seen in the judgment in the case of

Tech Plus Media Private Limited vs. Jyoti Jadia & Ors., when the suit
was dismissed for not mentioning the chain of title from the author of
the work. The Delhi High Court held that:

..The plaintiff is a juristic person and is incapable of being the author of any
work in which copyright may exist. However, the plaintiff can be the owner of
a copyright under an agreement with the author of the said work. For the
plaintiff to maintain the present suit, it is incumbent upon the plaintiff to
disclose the said work and the author thereof and the agreement under which
the author has made the plaintiff the owner of the copyright in the said work.
The plaintiff has not done so..... of the material facts required to be pleaded in
an action for infringement of copyright to show a right to sue, lacking in the
plaint."

4. Section 17 of the Copyright Act, 1957 concerns the first owner for each
of the work concerned.

5. In the case of a literary, artistic, dramatic or musical work, the author is

the first owner of the work. Literary work includes books, computer
software, contents published online, speeches delivered in public.
6. In the case of a a photograph, sculpture, drawing including architectural
drawings, plan or engraving, the author is the first owner of the work.

7. In the case of cinematographic work, the producer is the first owner of

the work. However, the author of the lyrics, music, artistic and dramatic
work which is incorporated in the cinematographic work, the author
shall retain their right for other purposes. In the case of sound
recording, the producer is the first owner of the work.

8. Similarly, where any of the above work, viz. literary, dramatic, artistic
work or photographs have been instituted by any person under a
contract, such person is the first owner of the work for the purpose for
which the contract was entered into. For all other purposes, the author
shall be the first owner of the work.

9. For a work created by any employee in the course of employment, the

employer is the first owner of the work. The words "in the course of"
have been subject of intense confrontation when the employee asserts
that the work was not created during the employment.
10. Similarly, work created by a partner during the course of his business
shall vest in the partnership. A draft prepared by a lawyer during the
course of his employment or engagement in a firm vest in the law firm
or employer.

10. In the case of a work created under a Contract of service the first owner
is the person who has instituted the service. It is akin to an employee –
employer relationship, where the employer has full control over the
object of the work as well as the manner in which it is to be achieved.
11. Whereas in the case of a work created under a Contract for service, the
first owner is the author. Under this, the author has the discretion to
adopt means for execution of a work. The difference in treatment for
the two works is on account of the discretion in the author while
creating the work. Hence, the first owner is also different in certain
circumstances

11. In the case of speech delivered in public, the person who has delivered
such address is the first owner of the work irrespective of the same
being delivered as an employee or when it is arranged by another
person.
 12. The Copyright Office insists on production of assignment deed from the
author of work in most of the works. Employment agreement with the
author will again show that the employer is the owner. For instance, in
the case of cinematograph work, assignment / no objection declaration
is to be filed from the actors, music composer, lyrics writer etc.

3.Give a detail account of Copyright board, its

constitution, powers & functions - VVVVVVVVVVV IMP
Copyright is a creation of the statute. The law of copyright in India is contained
in the Copyright Act, 1957 as amended subsequently from time to time. This Act
has been amended five times since then, i.e., in 1983, 1984, 1992, 1994, 1999
and 2012. The Copyright (Amendment) Act, 2012 is the most substantial.

The Indian copyright legislation provides for three important authorities and
institutions for registration of copyright, effective protection of copyright and
also for better enforcement of the copyright of owners and others. They are:
(1) Copyright office
(2) Copyright Board
(3) Copyright Societies

Copyright Board
Section -11. Copyright Board-

(1), The Central Government shall constitute a Board to be called the Copyright
Board which shall consist of a Chairman and not less than two nor more than
Fourteen other members.

(2) The Chairman and other members of the Copyright Board shall hold office
for such period and on such terms and conditions as may be prescribed.

(3) The Chairman of the Copyright Board shall be a person who is, or has been,
a Judge of a High Court or is qualified for appointment as a Judge of a High
Court.

(4) The Chairman of the Copyright Board and shall perform such functions as
may be prescribed.

The Copyright Board, a quasi-judicial body, was constituted in September 1958.

The jurisdiction of the Copyright Board extends to the whole of India. The
copyright board is a body constituted by the central govt. to discharge certain
judicial function under the Act.

[1] The Board is entrusted with the task of adjudication of disputes pertaining to
copyright registration, assignment of copyright, grant of Licenses in respect of
works withheld from public, unpublished Indian works, production and
publication of translations and works for certain specified purposes. It also hears
cases in other miscellaneous matters instituted before it under the Copyright
Act, 1957

It consists of a chairman and not more than fourteen other members. [2] The
Chairman and the members shall hold their office for five years. They may be
reappointed on the expiry of the tenure. [3] The chairman of the copyright board
must be a person who is or has been judge of a High Court or is qualified for
appointment as a judge of a High Court. [4] There is no qualification mentioned
about the members of the Board.

Powers of Copyright Board

The copyright board has been constituted to perform judicial functions.

Therefore, the copyright board has been accredited with the powers of civil
court for the purpose of Sec. 345 & 346 of the Code of Criminal Procedure,
1973.
All proceedings of the court are judicial proceedings within the meaning of Sec.
193 & 228 of Indian Penal Code, 1860. [8]

The Registrar of Copyright and the Copyright Board have the powers of a civil
court in respect of the following matters: [Section-9]

(a) Summoning & enforcing the attendance of any person and examining him
on oath (this jurisdiction extends to the whole of India); Section 10]
(b) Requiring the discovery and production of any document;
(c) Receiving evidence on affidavit;
(d) Issuing commission for the examination of witnesses and document;
(e) Requisitioning any public record or copy thereof from any court or office;
(f) Any other matter which may be prescribed.
Functions of Copyright Board

The first and foremost function of the copyright board is to look after whether
the provisions of the Act are followed without any violation or infringement and
to adjudicate certain cases pertaining to copyrights.

Other than this, the copyright board has been provided direct jurisdiction in
relation to matters:

(1) To decide the issue of publication and its date in order to determine the
term of copyright [11]
(2) To decide the term of copyright which shorter in any other country than
that provided in respect of that work under the Act [12] (The decision of the
Copyright board on the above question will be final)
(3) To settle disputes related to assignment of copyright [13]
(4) To grant compulsory licenses for Indian work [14]
(5) To grant compulsory licenses to publish the unpublished work [15]
(6) To grant compulsory licenses to produce and publish translation of literary
and dramatic works [16]
(7) To grant compulsory licenses to reproduce and publish certain categories of
literary, scientific or artistic works for certain purposes [Sectioon-17]
(8) To rectify the Register of copyrights on the application of registrar of
copyrights or any aggrieved persons [Section-18]

Other than this, another important function of Copyright Board is carried out
by the Registrar of Copyright Board.

The Registrar maintains a Register of Copyrights containing the names or titles

of works and the names and addresses of authors, publishers and owners of
copyright and other particulars as may be prescribed. [Section-19]

4.How to obtain a patent? Explain the procedure -

VVVVVVVVVV IMP
What is a Patent?
A ‘Patent’, in basic terms, is an exclusive right that is granted to any invention whether a
process or a product under the Patents Act. An ‘invention’, as per the Patents Act is
defined as ‘a new product or process involving an inventive step and capable of industrial
application’.
The definition highlights three important components, also referred to as the
patentability requirements, namely:

1. The invention should be a new invention i.e., the invention should not be
disclosed in the public domain in any manner prior to the date of filing of patent
application.
2. The product or process that has to be patented should involve an inventive step
i.e. the invention should in some manner involve technical advancement as
opposed to the existing knowledge. In simpler words, the invention should not be
obvious to another person possessing the same skill set.
3. The invention should be capable of industrial application, i.e. the process or
product intended to be patented should have the ability to be used or made in a
particular industry or any industry.
It is only upon satisfying these requirements that an invention becomes eligible for
protection under the Patents Act, 1970.
How to apply for a patent in India
A patent can be filed either physically, by submitting the necessary documents to a
patent registry present in the jurisdiction or near such jurisdiction, or it can be filed
electronically through the intellectual property e-filing portal.
Each invention is permitted to correspond with one application that is required to be
filed under the prescribed form as provided under the Patent Act and the Patent Rules.

Documents Required for filing a Patent Application

Enumerated below are the documents required for filing and prosecuting a patent
application in India.
1. Form 1 – Application for Grant of Patent
The application for grant of patent (under Form 1) includes preliminary and basic
information as regards the inventor. To elaborate further, Form 1 contains information
such as –
personal details of the inventor(s)
; the title of the invention; etc,

2. Form 2 – Provisional/ Complete Specification

Form 2 specifically requires the detailed specifications with regards the invention of the
product or the process.
In the event an inventor does not have the complete specification for the invention at
the time of filing or in case the invention is at a nascent stage, the inventor may provide
provisional specification with regards the invention.
However, it is pertinent to note that the complete specification of the invention has to be
provided within 12 (twelve) months of filing the patent application pursuant to section
9(1) of the Patents Act.
3. Form 3 – Statement and Undertaking
An inventor filing an international patent application for his invention is required to
provide a statement encompassing the details for such application as well as an
undertaking that the inventor (from time to time) would inform the Controller General of
Patents, Designs and Trademarks (“Controller General”) (in writing) of any applications
filed with regards the same or similar inventions in any country outside India.
4. Form 5 – Declaration as to Inventorship
Pursuant to section 10(6) of the Patents Act, an inventor is required to provide a
declaration stating that they are the true inventor(s) of the invention.

Steps to register a Patent

The steps from the initiation of an invention to the grant of patent for the invention are
elaborated below:

Considering an Invention
When an inventor decides on inventing a product or a process, it is imperative that the
inventor take note of all details as regards the invention including the steps, the minute
details and any diagrams, steps, mechanism that may be involved in creating the
invention.
Importantly, the Patents Act (under section 3) provides certain category of processes
and products that are excluded from being considered as inventions,
such as literary, dramatic or artistic work; any process for the medicinal, surgical
purpose for any treatment of human beings; any invention that is frivolous in nature;
any invention that is contrary to public order and morality and its intended uses is for
commercial exploitation, etc.
An inventor has to make sure that their invention complies with the requirements of (as
mentioned above in Part II) novelty, inclusion of an inventive step and being capable of
industrial application and also to ensure that their particular invention does not fall
under the ambit of section 3 of the Patents Act.

Patent Search
Before filing a patent application, it is imperative to conduct a patent search for
existence of similar inventions.. Therefore, in order to avoid any rejection from the
relevant authorities with regards patent protection, it is imperative that a patent search
be conducted prior to filing an application.

Drafting of Application
This is the most important step in the process of patent registration. As has been
mentioned above, an application for grant of patent is accompanied by
• Form 2, which requires the inventor to provide specifications as regards their
invention. It is advisable that the specification be as detailed as possible and
include the various parts of the invention (if divided in stages);
• drawings and diagrams to showcase the mechanism of the inventions;
 • background of the invention;
• a detailed description of what the invention entails, the purpose for which it is
being created and how it would serve the particular industry it would potentially
belong to;

Filing of the Application

An application for grant of patent can be filed either physically at the patent registry or it
could be filed electronically.
Form 1 (with the primary details of the inventor) or
Form 2 (with the provision or complete specifications);
Form 3 (in case the application is an international application);
Form 5 (declaring all the inventors of the invention) and
Most importantly, in the event, a complete specification is filed within 12 (twelve)
months of filing the application, the inventor shall
secure a prior date of filing on the application that was initially filed (with the
provisional specification).

Publication
An application for grant of patent is published 18 months after filing of the application or
from the date of priority, whichever is earlier (Rule 24 of the Patent Rules).
Interestingly, the Patent Act provides for expediting of publication of an application in
case the Applicant does not wish to wait for the entirety of the 18 month period. In such
a case, the applicant can file Form 9 (request for an early publication) along with the
prescribed fee. I
n furtherance of the request for an early publication, the Controller General will be
required to publish the application within 1 (one) month of filing the request.

Request for Examination

subsequent to publication of the application, a request for examination has to be filed
under Form 18.
The request for examination has to be filed within 48 (forty-eight) months from the date
of filing or date of priority of the application.

Objections
In case any objections are raised under the first examination report, the applicant
(inventor) or the assigned agent on behalf of the applicant is required to file a response
to the raised objections and to comply with any requirements as raised within a period
of 6 months from the date on which the first examination report was issued

Grant of Patent
Subject to all objections being cleared, in the event the examiner and the Controller
comes to the conclusion that the application and the ancillary documents are statutorily
compliant, an order for grant of patent is notified to the applicant and subsequently
published in the patents journal.
In case there are any opposition to the grant of patent, any person is permitted to file a
notice of opposition addressed to the Controller General, within 1 year from date of
publication from grant of patent.

5.What are the powers of the controller of patentee ?

The Patents Act empowers the Controller with various powers and
responsibilities as follows for performing certain duties –

1. Section 15 – Powers of Controller to refuse or require amend

application in certain cases.

If the application or any specification or any other document filed in

pursuance thereof does not comply with the requirements of this Act or
of any rules made thereunder, the Controller may refuse the application
or may require the application, specification or the other documents, to
be amended to his satisfaction ,and refuse the application on failure to do
so.

2. Section 16 – The Controller can make orders respecting division of

application if the claims of the complete specification relate to more
than one invention.
3. Section 17 –Power of the Controller can make orders to post-date a
patent application upon a request made by the applicant to such date
not later than six months from the date on which the application was
actually made .
4. Section 18 – Powers of Controller in cases of Anticipation .

Controller can refuse a patent application in case of anticipation unless

the applicant amends his complete specification to the satisfaction of the
Controller.

5. Section 19 –Powers of controller in case of potential Infringement.

 The Controller can direct that a reference to another patent shall be
inserted in the applicant’s complete specification by way of notice to the
public ,unless the applicant shows to the satisfaction of the Controller that
there are reasonable grounds for contesting the validity of the claim of
the other patent .

Section 20 – Powers of Controller to make orders regarding

substitution of applicants in case of assignment or agreement made
by one or more applicants jointly.

Genral powers of Contrioller

Section 77 to 81 deals with powers of Controller generally

6. Section 77 – The Controller has the powers of a civil court while trying
a suit under the Code of Civil Procedure, 1908 in respect of the
following matters
a) summoning and enforcing the attendance of any person and
examining him on oath;
b) requiring the discovery and production of any document;
c) receiving evidence on affidavits;
d) issuing commissions for the examination of witnesses or documents;
e) awarding costs;
f) reviewing his own decision on application made within the prescribed
time and in the prescribed manner;
g) setting aside an order passed ex- parte on application made within
the prescribed time and in the prescribed manner;
h) any other matter which may be prescribed
7. Section -78- Powers of Controller to correct clerical errors etc,.
 Controller has powers to correct any clerical error in any patent or in
any specification or document filed in pursuance of an application for
patent.

8. Section 79 – The Controller has the power to take oral evidence in lieu
of, or in addition to, evidence by an affidavit, or may allow any party to be
cross-examined on the contents of his affidavit.
9. Section 81 – The Controller has powers of disposal of an application
for extension of time by granting extension, and no appeal lie from any
order of the Controller granting such extension.
10. Section 146 – The Controller may, at any time during the
continuance of the patent, by notice in writing, require a patentee, to
furnish to him within two months from the date of such notice
• such information or such periodical statements as to the
extent to which the patented invention has been
commercially worked in India .

6.What do you understand by infringement of copyright? What are

the remedies available against the infringement of Copyright?-
VVVVV IMP

Rights of a Copyright Owner

The name of the author or publisher that appears in the copies of dramatic,
literary, artistic or musical work is presumed to be the author/copyright
owner of the work. A copyright owner has the following rights in the
copyrighted work:

• Produce the work in public

• Publish the work
• Perform the work in public
• Translate the work
• Make a cinematograph film or a record of the work
 • Broadcast the work
• Make an adaptation of the work
• Make copies of the work and distribute them
• Prevent others from unauthorised usage of the copyrighted work

Copyright Infringement.
As per the Copyright Act, 1957, the use of a copyrighted work without the
permission of the owner results in copyright infringement.

Infringement occurs when a third person unintentionally or intentionally

uses/copies the work of another without giving credit. It is usually classified
into two categories, i.e. primary and secondary infringement.

Primary infringement occurs when there is an actual act of copying,

while secondary infringement occurs when unauthorised dealings take
place, such as selling or importing pirated books, etc. In the case of
secondary infringement, the infringer will know about infringement, while in
the case of primary infringement, the infringer may or may not know about
infringement.

The following elements should be present for copyright infringement:

• The copyrighted work is the original creation of the author

• The copyright infringement work is actually copied from the work

of the author

Instances Where Copyright Infringement Occurs

As per the Copyright Act, 1957, a copyright infringement occurs in India in

the following cases:

• Copies of copyrighted work are made for hire/sale without

authority or permission, such as online piracy
 • Infringing copies are distributed for personal and trade gains
• Copyrighted work is performed in a public place
• Infringing copies are imported into India
• Public exhibition of infringing copies prejudicial to the owner
• Reproduction of a dramatic, literary, artistic or musical work
other than in the form of a cinematograph film
• Creating a recording embodying the copyrighted sound
recording
• Copy of the cinematographic film

Copyright Infringement Examples

• When someone downloads movies from an unauthorised

source, it will be copyright infringement.

• When a person uses a television serial clip in a youtube video

without giving credit and publishes the serial clip on youtube, it
amounts to copyright infringement.

• When someone uses a song’s music as background music in

his/her song, it results in copyright infringement.

Copyright Infringement Cases

YRF vs Sri Sai Ganesh Productions

In this case, YRF filed a copyright infringement suit against Sri Sai Ganesh
Productions on the grounds that it copied their movie ‘Band Baaja Baaraat’
and produced ‘Jabardasht’ movie which had substantial and material
similarities in terms of concept, theme, character, plot, story, script and
expression amongst other things.
The court held that Sri Sai Ganesh Productions had blatantly copied the
YRF film’s essential, fundamental and distinctive features, resulting in
copyright infringement.

Hawkins Cooker Ltd. vs Magicook Appliances

Hawkins Cooker Ltd sued Magicook Appliances on the grounds of illicitly
using their label registered under the Copyright Act, 1957, which they used
on their renowned pressure cooker line. The court deterred Magicook
Appliances from using the Hawkins Cooker Ltd cookbooks. It ordered
Magicook Appliances to deliver damages to Hawkins Cooker Ltd company
for all alleged books, products, and articles employed by them in
manufacturing the offending goods

Super Cassettes Industries Limited vs YouTube and Google

Super Cassettes Industries Limited (SCIL) claimed that the YouTube
business model makes a substantial profit from using the copyrighted work
uploaded without approval from the copyright owners and without paying a
royalty for the same. The court opined that YouTube, the video streaming
giant and Google should stop distributing, reproducing, displaying or
transmitting on their portal any audio-visual works in the exclusive
ownership of the SCIL.

Remedies For Copyright Infringement

The authors/copyright owners can take legal action against a person or

entity infringing their copyrighted works. The copyright owner can file a civil
case in a court having jurisdiction and is entitled to remedies by way of
damages, injunctions and accounts. A criminal suit can also be filed in a
court of a First Class Judicial Magistrate or Metropolitan Magistrate.

In the case of copyright infringement by an artificial judicial person like a

company or Limited Liability Partnership (LLP), the company/LLP and all
persons in charge at the time of committing the offence or responsible for
the conduct of the business would be liable for the infringement.

Civil Remedies

Where a copyrighted work has been infringed, the copyright owner is

entitled to remedies of injunction, damages and accounts. However, when
the infringer proves that he/she was unaware and had no reasonable
ground for believing that copyright existed in work at the infringement date,
the copyright owner will not be entitled to any remedy except an injunction.

Injunction: Injunction is the effective remedy for copyright infringement. An

injunction means a judicial process through which the infringer is restrained
to continue the infringing acts or is ordered to restore the position which
stood before the infringement.

Damages: Damages are compensation provided to the copyright owner.

The purpose of ordering to provide the damages to the copyright holder is
to restore the owner to the earlier position.

There are various factors to determine the damage amount. Generally, the
damages are the amount the copyright holder would have gotten from the
infringing acts if the infringer had obtained the licence for such acts.
Various other factors, such as loss of reputation, loss of profit to the
copyright holder, decrease in the sale of the copyright holder’s work, etc.,
determine the damages amount.

Accounts of profit: The infringer can be asked to submit an account of

profits made from the sale of the copied works and pay such an amount to
the copyright owner.
Criminal Prosecution for Copyright Infringement

When a person knowingly infringes or abets the infringing act of a

copyrighted work, then the offence is a criminal offence under the
Copyright Act, 1957. When the copyright owner files a criminal suit for
copyright infringement, the minimum punishment for the infringement is
imprisonment for six months, which can extend to three years, with a
minimum fine of Rs. 50,000, which can extend up to Rs.2 lakhs.

In the case of a subsequent and second conviction, the punishment is

imprisonment for a minimum of one year, extending to three years and a
fine of Rs.1 lakhs, extending to Rs.2 lakhs.

Any police officer (not below the sub-inspector rank) can seize the
infringing copies without a warrant when the police officer is satisfied that a
copyright infringement offence in any work has been committed and
produce them before the Magistrate.

Copyright aims to protect the author’s rights and provide them with
economic benefits. The scope of copyright protection extends to all original
works which demand creativity, including computer software and
databases.
7. Discuss the rights & duties of the patentee -
VVVVVVVVVV IMP
Rights and Obligations of Patentee in India

The patentee is entitled to exclusive ownership of an invention for a set period

of time under a patent.

A patentee receives several significant legal rights when their innovation is

patented.

If you are aware of your patent rights, you may take the appropriate action if
somebody is caught copying your innovation. To prevent the violation, an
innovation must be patented in India under the provisions of the Patents Act,
1970. The patentee is granted some rights under the same statute, as well as
some requirements that must be met.

What is a Patent?

The word "patent," as used in the Indian Patent Act of 1970, refers to a patent
issued for a novel technique or item involving an innovative step and suitable
for industrial use.

In exchange for complete exposure to innovation, the government grants the

patentee exclusive statutory protection for a set amount of time. They grant the
patent holder a monopoly so that no one else may use, create, offer for sale,
sell, or import the patented goods.

The protection of the inventor's intellectual property rights is guaranteed by

patent legal action. It grants the patent proprietor exclusive rights over the sale
and production of the patented goods. This right gives the creator the authority
to control how and how much the invention may be employed by users.

An inventor must submit an application for the invention's patent grant in order
to uphold these rights. The inventor receives exclusive privileges upon the
conclusion of official procedures and evaluations.

What are the Rights of a Patent Holder/ Patentee?

The owner of a patent is entitled to a number of benefits, including;-

1. Right to Exploit the Patent

The authority to use, market, produce, and distribute the protected goods is
granted to the patent holder in India. If the innovation involves a manufacturing
method, the patent holder retains the right to impart the method to a third
party. Additionally, the patent holder's attorney has the authority to enforce this
claim.

If a new innovation is a commodity, the patent holder is granted the only right
to manufacture, market, and utilise the innovation in India for designated uses.
On the other side, if the innovation relates to the production of a substance or
an object, the right to exploit encompasses the exclusive right to use the
production method or system within the boundaries of India.

The exclusive right of a patentee to pursue commercial gains from the

innovation is taken into account by Indian patent law,It motivates creators to
engage in their creative endeavours because they know that their ideas will be
legally protected and that no one else will be able to copy them within a set
length of time (mostly 20 years).

2. Right to Grant or Assign Licenses

The owner of a patent has the authority to delegate or give licences to third
parties for the purpose of producing and distributing the protected goods. When
there are several patent owners for a patented product, all patent owners must
agree to issue the licence to a third party as a group. Only after the administrator
has properly approved the request, the licence is deemed to be issued.

3. Right to Surrender the Patent

After properly requesting authorization from the controllers, the patent holder
has the authority to abandon the patent. The Controller then publishes this
surrendering in accordance with the Indian Patent Act's regulations. The parties
looking to acquire patent ownership can speak with the Controller directly. The
Controller then reviews the party's claims and assigns the ownership.
5. Right to Apply for the Patent of Addition
This provision is included in the Patents Act of 1970, sections 54 to 56. The
clause permits alterations to the current invention. In these situations, as soon
as the notification of approval is made public, the patent holder is given the right
to the improved innovation. The owner is given the same rights as that of the
prior patent upon the presentation of the notification.

6. Right to Sue in Case of Infringement

Patent infringement is the word used to describe any violation of a patent
holder's privileges. A patentee may file a complaint with either a lower court or
a high court to have any rights violations addressed. In the event that the
defendant is convicted of infringing, the court may decide to give compensation
or a long-term order.

Case Law

Bajaj Auto Ltd. vs TVS Motor Company Ltd.

In the case, TVS Motor Company applied for and used the proprietary Digital
Twin Spark Ignition (DTSi) technology without authorisation (Defendant). The
DTSi belonged to BAJAJ Auto Limited as its intellectual property (Plaintiff).
Plaintiff submitted a patent application in 2002 and was given a patent in 2005
for the technology.

In the end, the Madras High Court ruled that the plaintiff had the DTSi
technology patent and has been using it for five years.

What are the Obligations of Patentees?

1. Duty to Disclose the Patent:

The petitioner must reveal the innovation to society, according to Section 8 of

the Patent Act of 1970.

At the time of applying for a patent or within 6 months of submitting

applications, the patentee is unequivocally required to disclose all necessary
information regarding the faraway application of an identical or nearly identical
innovation that has been documented, according to Section 8(1) of the Patent
Act of 1970.
 The patent holder must also include all of the mentioned parameters in the
applications. Additionally, the patentee should make an effort to disclose any
relevant points in any upcoming application that may be recorded. According to
Section 8(2) of the Patent Act, the patentee must provide all the information
required by the Controllers on the innovation within six months after making
the request.

2. Duty to Request for Examination:

. According to Section 11(B) of the Patents Act, it is the patentee's responsibility

to ask the Controllers to look at how the patent has developed or grown.

3. Duty to Respond to Objections:

The Patent Controller sends the inspection demand to an investigator, who

evaluates the development before sending the First Examination Report (FER)
back to the Patent Director. In some cases, the First Examination Report will
mention some complaints. Responding to such reports of objection is the
responsibility of patentees. They must also communicate within a year after the
FER's issue. The patentee's claim will automatically be forfeited if this is not
done.

4. Duty to Clear all Objections:

The holder of a patent is required to respond to any criticism and refute any
claims made against their innovation. A meeting can also be necessary if the
Patent Administrator has not performed their role. The Patent Controllers have
the authority to transfer the patent claims to any opposing party if the petitioner
doesn't respond to the complaints.

5. Duty to Pay Statutory Fees:

The patentees must also pay all statutory costs associated with the registration
procedure in order to be granted a patent. The patent will not be taken into
consideration for the grant if the payment is not made. The payment of
appropriate charges and the consequences of not paying specified fees are
covered in Section 142 of the Patent Act.
8.Discuss concept of Infringement of Trademark & how it
can be distinguished from passing – off? – VVVVVV IMP

What Is A Trademark?
A Trademark is a phrase, unique symbol, or word, which is used by an
individual, business organization, or any other legal entity.

A Trademark is used by brand owners to distinctively identify the service and

source of products of a brand to the consumers and to differentiate the
product and services of a brand with other similar products in the market.

The Trademarks which are registered are designated with ® symbol.

The need of Trademarks to represent goods and services can be considered a
three-prong approach by:

• Helping the consumers to recognize the source

• Helping the consumers to determine the quality
• Helping consumers to make the right purchasing decision.

It is very imperative to protect the misuses and Infringement of Trademark if

any of the values are added to the trademark of products or services.

What Is Trademark Infringement?

The Trademarks are protected under the Trademarks Act, 1999. The
Trademark Act, 1999, provides for the provisions dealing with protection,
Registration, and penalties for Infringement regarding the Trademarks in India.

In simple words, Trademark Infringement is unauthorized use of a mark by an

unauthorized person, which is identical or deceptively similar to an already
registered Trademark. The term deceptively similar means that when a
common consumer looks at the mark, it will be confusing the consumer with
the other registered trademark. Hence, this confusion will affect the registered
Trademark product and services.

The provisions related to Trademark Infringement mainly focus upon three

main objectives of any person who is using the registered trademark but is
not the registered user of the trademark. The three main objectives are as
follows:
 • Damaging the reputation and uniqueness of registered trademark,
• The intention of usage of trademark, despite having the knowledge of
such usage is unlawful, or
• Having a dishonest intention of taking undue advantage.

Furthermore, Trademark infringement can also be caused by an

advertisement. The advertisement should take unfair advantage of the
registered trademark and also damages the reputation and uniqueness of the
registered trademark. If the visual representation and spoken use of certain
words affect the uniqueness of a registered Trademark, then it will amount to
Trademark Infringement.

In light of advertisement, multiple courts have elaborated on what can

constitute Infringement of Trademark.

In the case of Reckitt India Limited vs. Hindustan Unilever Limited, the
defendant company has portrayed the Dettol Soap (product of appellant) as
ordinary soap in the advertisement of their product Lifebuoy soap. The
ordinary soap in the advertisement allows the germs to enter the skin through
cracks of the skin.

The appellant company claimed that such advertisement is causing huge

damage to the goodwill and reputation of their Company product.

The court gave ruling in favour of the appellant that the general public can
view the advertisement and possibly refer to Dettol soap as ineffective
soap.

What Are The Types Of Trademark Infringement?

The following are the types of Trademark Infringement:

Direct Infringement
Under Section 29 of the Trademark Act, 1999, direct Infringement is defined.
There are some elements that should be met before any direct breach to
occur. The elements are as follows:
Usage by an Unauthorized Person

• The violation of a registered Trademark only happens when the use of a

Trademark is done by
 • a person who is not authorized by the holder of a registered
Trademark..
Identical or Deceptively Similar
• The trademark being used by the unauthorized person should be either
deceptively similar or identical to the registered trademark of the
original holder.
• The meaning of term Deceptively Similar is that the common consumer
‘may’ get confused between two similar Trademarks and ‘may’ think
that both the Trademarks are same.
• The word ‘may’ signify that it is only required to prove that there is a
possibility of such kind of confusion and hence no need to prove the
actual happening of such confusion. A mere chance of misrecognition of
the Trademarks is enough to prove that there has been Trademark
Infringement of a product or services of a registered Trademark.

Indirect Infringement
In the Trademark Act, 1999[1], there are no provisions which deal with
indirect Infringement particularly. Hence, it cannot be said that there is no
liability for Indirect Infringement.
The Universal Principle of Law provides for the principle and application of
Indirect Infringement. These principles hold not only accountable the principle
infringer but also hold accountable the person who induces or abets the
principal infringer for Infringement.

The different types of Indirect Infringement are as follows:

Vicarious Liability

• As per Section 114 of Trademark Act, 1999, any company committing

an offense under this Act will be liable. The Company will be liable as a
whole, and this means that all the person will be liable for the offense.
Hence, it can be said that not only the principal infringer but every
person of the Company will be liable for indirect Infringement. An
 exception from Vicarious Liability is given to the person who acted in
good faith and without any knowledge of Infringement.

• The only exception to Vicarious Liability for the Company who is liable
for Infringement is when the Company can prove that the Company has
acted in good faith and had no idea or knowledge about the
Infringement.
Meaning of Passing-Off
“If a person sells his goods as the goods of another” then the trademark owner
can take action as this becomes a case of passing off. Passing off is used to
protect or safeguard the goodwill attached to an unregistered trademark.

When the trademark has been registered by the owner and infringement
happens, then it becomes a suit for infringement, but if the trademark has not
been registered by the owner and infringement happens then it becomes a
case of passing off.

The principle of passing off, i.e. “Nobody has the right to represent his goods as
the goods of somebody else” was decided in the case of Perry v Truefitt
(1842).
Difference between Passing Off and Infringement of Trademark
Passing off and trademark infringement is distinctive and is of different
concepts.
• Passing Off is the protection of the goodwill of traders about
to with concerning goods and services.
• “Goodwill” is the reputation of the brand that was built
about to with concerning specific goods or services and
which attracts customers. It can be shared between an
individual merchant or in some cases, such as all
manufacturers of a specific product in a specific area.

A party who holds the rights to a certain trademark can sue other parties for
trademark infringement. The possibility of confusion determines whether a
person can sue another business or person for trademark infringement.

If the use of another person’s trademark to sell a product or service is likely to

cause consumer confusion about the source of the product or service, then the
person poses a potential for trademark infringement.
The main difference is that trademark infringement is related to registered
rights, and passing off related to unregistered rights of a person or company,
entity, etc.

In simple words when the trademark has been registered by the owner and
infringement happens, then it becomes a suit for infringement, but if the
trademark has not been registered by the owner and infringement happens,
then it becomes a case of passing off.

Short Questions
1.Meaning of Intellectual Property
What is Intellectual Property?

Intellectual property (IP) refers to creations of the mind, such as inventions;

literary and artistic works; designs; and symbols, names and images used in
commerce.

IP is protected in law by, for example, patents, copyright and trademarks,

which enable people to earn recognition or financial benefit from what they
invent or create. By striking the right balance between the interests of
innovators and the wider public interest, the IP system aims to foster an
environment in which creativity and innovation can flourish.

Intellectual property is a broad categorical description for the set of intangible

assets owned and legally protected by a company or individual from outside
use or implementation without consent. An intangible asset is a non-physical
asset that a company or person owns.

KEY TAKEAWAYS

• Intellectual property is an umbrella term for a set of intangible assets or

assets that are not physical in nature.
• Intellectual property is owned and legally protected by a person or
company from outside use or implementation without consent.
• Intellectual property can consist of many types of assets, including
trademarks, patents, and copyrights.
 • Intellectual property infringement occurs when a third party engages in
the unauthorized use of the asset.
• Legal protections for most intellectual property expire after some time;
however, for some (e.g., trademarks), they last forever.

Types of intellectual property

Do you know what the difference is between a patent and an industrial design,
how to protect your photo with a copyright, or why you would want to obtain
a protected designation of origin? Discover everything you ever wanted to
know about IP rights.

Patents
A patent is an exclusive right granted for an invention. Generally speaking, a
patent provides the patent owner with the right to decide how - or whether -
the invention can be used by others. In exchange for this right, the patent
owner makes technical information about the invention publicly available in
the published patent document.

Copyright
Copyright is a legal term used to describe the rights that creators have over
their literary and artistic works. Works covered by copyright range from books,
music, paintings, sculpture and films, to computer programs, databases,
advertisements, maps and technical drawings.
Trademarks
A trademark is a sign capable of distinguishing the goods or services of one
enterprise from those of other enterprises. Trademarks date back to ancient
times when artisans used to put their signature or "mark" on their products.

Industrial designs
An industrial design constitutes the ornamental or aesthetic aspect of an
article. A design may consist of three-dimensional features, such as the shape
or surface of an article, or of two-dimensional features, such as patterns, lines
or color.
Geographical indications
Geographical indications and appellations of origin are signs used on goods
that have a specific geographical origin and possess qualities, a reputation or
characteristics that are essentially attributable to that place of origin.
Most commonly, a geographical indication includes the name of the place of
origin of the goods.
Trade secrets
Trade secrets are IP rights on confidential information which may be sold or
licensed. The unauthorized acquisition, use or disclosure of such secret
information in a manner contrary to honest commercial practices by others is
regarded as an unfair practice and a violation of the trade secret protection.

2.Sealing of patent
43. Grant and sealing of patent

(1) Where, a complete specification in pursuance of an application for a patent

has been accepted and either

-(a) the application has not been opposed under section 25 and the time for
the filing of the opposition has expired; or

(b) the application has been opposed and the opposition has been finally
decided in favor of the applicant; or

(c) the application has not been refused by the Controller by virtue of any
power vested in him by this Act, the patent shall, on request made by the
applicant in the prescribed form, be granted to the applicant or, in the case of
a joint application, to the applicants jointly, and

the Controller shall cause the patent to be sealed with the seal of the patent
office and the date on which the patent is sealed shall be entered in the
register.

(2) Subject to the provisions of sub-section (1) and of the provisions of this Act
with respect to patents of addition, a request under this section for the sealing
of a patent shall be made not later than the expiration of a period of six
months from the date of advertisement of the acceptance of the complete
specification:

PROVIDED that-(a) where at the expiration of the said six months

• any proceeding in relation to the application for the patent is pending

before the Controller or the High Court,
 • the request may be made within the prescribed period after the final
determination of that proceeding;

b) where the applicant or one of the applicants has died before the
expiration of the time within which under the provisions of this sub-
section the request could otherwise be made,

• the said request may be made at any time within twelve months after
the date of the death or at such later time as the Controller may allow

• .(3) The period within which under sub-section (2) a request for the
sealing of a patent may be made may, from time to time, be extended
by the Controller to such longer period as may be specified in an
application made to him in that behalf,

• if the application is made and the prescribed fee paid within that longer
period:

• PROVIDED that the first-mentioned period shall not be extended under

this sub-section by more than three months in the aggregate

• .Explanation : For the purposes of this section a proceeding shall be

deemed to be pending so long as the time for any appeal therein (apart
from any future extension of that time) has not expired, and a

• proceeding shall be deemed to be finally determined when the time for

any appeal therein (apart from any such extension) has expired without
the appeal being brought.

3.Honest concurrent user

As per Section 11 of the Trade Marks Act, 1999, a trademark shall not be
registered if it is identical to an earlier trademark. This provision prevents
public confusion regarding the ownership or origin of the goods claimed.

For a mark to get protection under the Trade Marks Act 1999, it has to be
registered with the Trade Mark Registry.

When a mark is applied for registration, it can be objected by the Registrar of

Trade Marks under two broad grounds.
a) Absolute Grounds &. b) Relative Grounds

. Section 9 of the Act lays down absolute grounds for refusal of registration,
whereas Section 11 lays down relative grounds for refusal of registration.

Section 11 prevents a mark that is identical or similar to previously

registered mark from getting registered.

The applicant can take up several defenses when the registration is objected to
under Section 11 of the Act.

“Honest Concurrent Use,” as laid down under Section 12 of the Act, is one of
those grounds that the applicant can use to evade getting tangled in a
trademark infringement battle.

Section 12 of the Trademark Act lays down the doctrine of Honest Concurrent
User.

Concurrent use is when users have identical or similar marks on similar or non-
similar goods. The main contention to prove the honest concurrent use is that
the applicant has been using the mark in a bonafide manner and/or didn’t
know the earlier registered trademark.

The applicant must also prove that the relevant customers associate their mark
with their product or service.

Documents to prove Honest Concurrent Use

Some of the documentary evidence which can prove honest concurrent use
under Section 12 of the Act are:

1) If it is a mark already in use, then the evidence to prove the period of the
usage of the mark;
2) Advertisements of the mark and the proofs of the amount spent on the
advertisement of the mark;
3) The applicant can also produce books of accounts showing the yearly sales
figures for goods/services offered under the mark.

All the above evidence helps the applicant to prove that the consumers have
started associating the mark with his product/services offered under the mark.
Landmark Cases using the defense of Honest Concurrent Use

In the case of Kores(India) Ltd. v. M/s Khoday Eshwarsa and Son [(1984) Arb
LR 213 (Bom)], five factors were laid down as being necessary for determining
the registrability of a trademark. These were:

1. The quantum of the concurrent use of the trademark in connection with the
goods concerned and the trade’s duration, area, and volume.
2. The degree of confusion likely to ensue from the resemblance of the marks
indicates the measure of public inconvenience.
3. The honesty of the concurrent use
4. Whether any instances of confusion have been proved.
5. The relative inconvenience would be caused if the marks were registered,
subject if necessary to any conditions and limitations.

4.Videos piracy

Definition of piracy

In medieval presets, the term piracy was often used for the act of raiding or
looting, which involved the ship-borne looters, who then attacked dwellers of
another ship or a coastal area, with the primary purpose being to loot them of
their belongings, such as cargo or other valuables.

However, in today’s world piracy is a more relevant and commonly used term,
which constitutes theft on copyrighted and trademarked grounds i.e.
unlawfully stealing and infringing someone else’s work and produce it as one’s
own.

Piracy in the digital realm can be compared to physical theft and piracy, because
when a person illegally distributes a digital file on the internet or locally for free,
he prevents the profit from the purchase of that item from going to the creator,
creating an economic impact comparable to when actual pirates looted cargo.

Types of piracy

Piracy, when elaborated in terms of software, can be classified into 5 types,

those being –
 • Counterfeiting: It is the illegal acquisition, duplication, and distribution
of any copyrighted material, which directly imitates the copyrighted
product. The nature of the distribution of the said product may be a
sale, or not. The most common way of distributing such pirated works
is through compact discs.
• Internet Piracy: Internet piracy is the act of downloading a file from the
internet, or by procuring an online software through a compact disc.
Methods of conducting internet piracy are websites offering free
downloads of software, auctions selling illegally obtained software.
• End-User Piracy: This form of piracy involves the user illegally
reproducing software which he isn’t authorized to do. An example
would be a user using one license to the software and installing it on
multiple systems, or upgrading an already pirated software.
• Client-Server Overuse: In a computer network, when the number of
clients exceeded the number prescribed in the server license, then it is
termed as overuse piracy.
• Hard-Disk Loading: This occurs when a business sells new computers
with illegal copies of software loaded onto the hard disks to make the
purchase of the machines more attractive.

Piracy in movies

The act of illegally acquiring, copying, reproducing and then distributing film
media, without having any legal right or license to do so, is considered movie
piracy. The most common occurrence of this is the distribution of these movies
on websites..

Piracy in software

Software piracy describes the act of illegally acquiring, copying, reproducing,

and distributing software without a license to do so. Software piracy has become
much more rampant in this generation of technology, as most software has
converted into a one-user license i.e. it can only be redeemed once by one user
for his use alone. Distributing this software, such as sharing with a friend, or via
the internet, is illegal.

Pirating movies
Movie piracy has become a more controlled art in recent times, from shaky
recordings on camcorders to dedicated sites, apps, and add-ons to physical
hardware, piracy has grown more subtle yet more dangerous as a practice. In
the UK, over a third of people who are above the age of 16 pirate movies.

The method of pirating movies and uploading them online has also grown more
intricate and difficult to track. Pirates often make use of BitTorrent to upload
their files and store them online.

Piracy in India
India is one of the few countries that has multiple dominant box office film
industries, in Bollywood, Hollywood, and Tollywood. As such, piracy is a much
more dominant force considering there is a lot more material to pirate which
the local audience would be interested in. Internet users often use VPNs to visit
torrent sites which host songs, games, movies and the like. Local vendors at
technological hubs often carry compact discs with pirated movies and games,
which are sold at cheap prices.

Punishment for piracy

Illegal downloading of movies

The Union of India recently issued an amendment to the Cinematograph Act,
1952, in order to clearly define the punishment which can be faced by pirates
who, without the written authorisation of the copyright owner, use any
recording device to make or transmit a copy of a film. It is not necessary for the
film to be fully recorded, or even distributed via the internet. If the perpetrator
attempts to record the movie while inside the theatre, he is guilty under the act.

The punishment for this is generally imprisonment, a fine, or both. This

punishment can also extend to those who download said pirated movies.
5.Kinds of trademark
Types of Trade Marks
There are various of types of trademarks which can be registered
like,
product mark,
service mark,
collective mark,
certification mark,
shape mark,
sound mark and
pattern mark.
Though there are many kinds of trademarks, their purpose is for
the same – which is to enable the consumers identify goods and
services originating from a certain manufacturer or services
provider.

Product Mark
Product mark is a mark that is used on a good or on a product rather than
on a service. This this type of trademark is used to recognize the origin of
the product and helps in maintaining the reputation of a business.
Trademark applications filed under trademark class 1-34 could be termed
as a product mark, as they represent goods.

Service Mark
Service mark is similar to the product mark but a service mark is used to
represent a service rather than a product. The main purpose of the service
mark is that it distinguishes its proprietors from the owners of other
services. Trademark applications filed under trademark class 35-45 could be
termed as a service mark, as they represent services.

Collective Mark
Collective mark is used to inform the public about certain distinguished
features of a product or service used to represent a collective group of
individuals can use this mark so that they are collectively protecting a goods
 or service. The mark holder can be an association or can be a public
institution.

Certification Mark
Certification mark is a sign that denotes a products origin, material, quality
or other specific details which are issued by the proprietor. The main
purpose of certification mark is to bring out the standard of the product and
guarantee the product to the customers.

Shape Mark
Shape Mark is exclusively used to protect the shape of the product so that the
customers find it relatable to a certain manufacturer and prefer to buy the
product. The shape of a particular product can be registered once it is
recognized to have a noteworthy shape. An example of a shape is the Coca-
Cola bottle or Fanta bottle, which have a distinctive shape identifiable with the
brand.
Pattern Mark
Pattern marks are those products that have specific designed patterns that
come out as the distinguishing factor of the product. Patterns which fail to
stand out as a remarkable mark is generally rejected since it does not serve
any purpose.
Sound Mark
Sound mark is a sound that can be associated with a product or service
originating from a certain supplier. To be able to register a sound
mark, when people hear the sound, they easily identify that service or
product or a shows that the sound represents. Sound logos are called as
audio mnemonic and is most likely to appear at the beginning or end of a
commercial in Television ads.

6. Property Marks

Property Marks means the trade names, trademarks, service marks, logos,
copyrighted identifying materials, domain names and other forms of
identification used to identify the Resort, Hotel or any of its facilities or
operations, and all variations thereof.
 and the names used to designate the restaurant and bar facilities within
the Resort, but shall exclude the Marriott Trademarks

According to Indian Law Trade Mark is the mark of the manufacturer or

quality of the goods whereas Property Mark is the Mark that shows that
the particular goods or movable property belong to a certain or specific
person.

What happens if someone tampers with the Property Mark?

Section 489 of the Indian Penal Code deals with tampering of Property
Mark, according to this section if someone with the intention to cause
injury to someone, ruins or spoils or damage the property mark or if
someone destroying or removing, or adding to any property mark with the
intention to cause injury to the other person would be punished.

Tamper: Tamper in simple words means when someone damages or

destroys or alters anything either to cause injury to someone or for his/her
own benefit.

Illustration:

1. A made the payment for his goods contained in sacks which were
marked with “PS” as property mark but his rival businessman B to
cause him loss and injury changed alphabet “P” by making it “B” so
the property mark will be changed to “BS” from “PS”. B has
committed under section 489 of the Indian Penal Code by tampering
with the property mark to cause injury to A.
.

What is the punishment if someone commits the offence under section

489 of the Indian Penal Code?

If a person is charged under section 489 of the Indian Penal Code then that
person would be punished either with imprisonment for up to one year or
fine or both.

IPC Section 489 is a bailable and non-cognizable offence. It can be tried in

front of any magistrate who has jurisdiction over the matter

Case laws:
K.Hasim v.State of Tamil Nadu: In this case, the Court held that section
489-A covers a complete act, and if a person or accused had performed any
part in the counterfeiting process is also covered under section 489-A.

Conclusion: Hence it is concluded that whoever makes any change by

altering or removing or addition or destroy the property mark from the
goods or from the containers that contain the goods to cause injury to the
person that goods belong or the owner of the property is said to commit a
crime under section 489 of the Indian Penal Code by tampering with the
property mark and would be punished with imprisonment or fine or both.

7.Berne convention
Summary of the Berne Convention for the Protection of
Literary and Artistic Works (1886)
The Berne Convention deals with the protection of works and the rights of their
authors. It is based on three basic principles and contains a series of
provisions determining the minimum protection to be granted, as well as
special provisions available to developing countries that want to make use of
them.
(1) The three basic principles are the following:

(a) Works originating in one of the Contracting States (that is, works the author
of which is a national of such a State or works first published in such a State)
must be given the same protection in each of the other Contracting States
principle of "national treatment"

(b) Protection must not be conditional upon compliance with any formality
(principle of "automatic" protection) [2].

(c) Protection is independent of the existence of protection in the country of

origin of the work (principle of "independence" of protection).

(2) The minimum standards of protection relate to the works and rights to
be protected, and to the duration of protection:

(a) As to works, protection must include "every production in the literary,

scientific and artistic domain, whatever the mode or form of its expression"
(Article 2(1) of the Convention).
(b) Subject to certain allowed reservations, limitations or exceptions, the
following are among the rights that must be recognized as exclusive rights of
authorization:
▪ the right to translate,
▪ the right to make adaptations and
arrangements of the work,
▪ the right to perform in public dramatic, dramatico-
musical and musical works,
▪ the right to recite literary works in public,
▪ the right to communicate to the public the
performance of such works,
▪ the right to broadcast (with the possibility that a
Contracting State may provide for a mere right to
equitable remuneration instead of a right of
authorization),
▪ the right to make reproductions in any manner or
form (with the possibility that a Contracting State may
permit, in certain special cases,
▪ the right to use the work as a basis for an audio-
visual work, and the right to reproduce, distribute,
perform in public or communicate to the public that
audio-visual work .
▪
The Convention also provides for "moral rights", that is, the right to claim
authorship of the work and the right to object to any mutilation, deformation or
other modification of, or other derogatory action in relation to, the work that
would be prejudicial to the author's honor or reputation.

Berne Convention for the Protection of Literary and Artistic Works of September 9,
1886, completed at PARIS on May 4, 1896,

revised at BERLIN on November 13, 1908,

completed at BERNE on March 20, 1914,

revised at ROME on June 2, 1928,

at BRUSSELS on June 26, 1948,

at STOCKHOLM on July 14, 1967, and

at PARIS on July 24, 1971, and amended on September 28, 1979

8.Piracy of Industrial design

Meaning of industrial designs

An industrial design is a conception or idea that defines the physical
appearance of the product by adding stylistic features to it in the form of
configuration, ornament, shape, or pattern to a finished article which is done
through industrial processes.

The aesthetic feature of an article is an industrial design in a legal sense. The

three-dimensional characteristics such as the form of an object, or two-
dimensional features, such as designs, lines, or colour, maybe an industrial
design.

and does not include any trade mark as defined in section 2 of the Trade and
Merchandise Marks Act, 1958 or property mark as defined in section 479 of
the Indian Penal Code or any artistic work as defined in section 2 of the
Copyright Act, 1957.

Piracy of designs
Under the law, if the ‘copyright in a design’ has been infringed, it is known as
“Piracy of Design”. In other words, if there is unauthorized use of designs or
duplication of such designs, which is then, being used for commercial purpose,
during the existence of such copyright, without having consent or license from
the registered proprietor of the design, it shall be considered as an unlawful
act “design piracy” also he is responsible for the damages.

Taking into consideration Section 22 of the Designs Act, 2000, it delivers

instances which account for piracy of designs”-

1. If an article whose design is registered is used for sale employing

fraudulent or obvious imitation of that design.
2. If an article whose design is registered is imported for sale without
having the consent of the proprietor of the registered design.
 3. If an article whose design is registered or such design has fraudulent
or obvious imitation in it, has been published or exposed for sale.

Therefore, if any article or class of articles whose design has already been
registered is used for sale by obvious or fraudulent imitation or being imported
for sale without the consent of the proprietor of the registered design or such
registered design is been published or exposed for sale having prior knowledge
that it has obvious or fraudulent imitation will be termed as piracy or
infringement of the registered design.

Fraudulent or obvious imitation

As discussed above, to constitute piracy of registered design, deceitful or
apparent imitation has to be present for infringement of copyright in the
design.

In a fraudulent imitation, the intention is to deceive the person and violate his
rights knowingly by imitating his registered design. Thus, this is to say that such
imitation must constitute the exact duplication of the registered design to
constitute piracy.

Remedies against piracy of designs

The inventor whose rights have been infringed due to the piracy of registered
design is entitled to judicial remedies. According to Section 22(2) of the
Industrial Designs Act, 2000, there can be 2 alternate remedies provided to the
registered proprietor in the case of design piracy:

1. to pay to the registered proprietor of the design a sum not exceeding

twenty-five thousand rupees recoverable as a contract debt, or
2. if the proprietor elects to bring a suit for the recovery of damages for
any such contravention, and an injunction against the repetition
thereof, to pay such damages as may be awarded and to be
restrained by injunction accordingly:

Provided that the total sum recoverable in respect of any one design under
clause (a) shall not exceed fifty thousand rupees:

Provided further that no suit or any other proceeding for relief under this
subsection shall be instituted in any court below the court of District Judge.
Case laws

Dabur India Limited v Rajesh Kumar & Others

Facts of the case

The plaintiff marketed ‘Dabur Amla Hair Oil’ into bottles with a distinctive
design, with a semi-circular shoulder with a curved back and front panel that
converged the shape and configuration of the bottle of the plaintiff was
unique, new, and original and was registered in design No-17324 under the
Designs Act. The green cap was likewise distinctive and it was also registered
following the Designs Act.
The case was fully heard and bottles of the complainant along with the
defendant were put before the court for comparing and following the long
arguments of the opposing parties.

Judgment
After examining the bottles, the Court initially noted that in the complaint, the
plaintiff had made inaccurate averments that the defendants sold the bottles
with the plaintiff’s trademark. The court found no bottle seized by the
defendant to carry the trademark ‘Dabur’ on the base or anywhere else and in
its report the Local Commissioner has also stated that seized bottles have not
been embossed ‘Dabur’ by the accused so it is clear that the plaintiff did this to
establish an infringement of the trademark.
The Court further found that the plaintiff did not mention any particular
originality in the design of the bottle, nor did the plaintiff mention any
originality in the registration certificate, because similar designs are used by
several leading firms long before the plaintiff registers this design.

Britannia Industries Ltd. v. Sara Lee Bakery [AIR 2000 Mad 497]

Facts of the case

The plaintiff is a firm dedicated to manufacturing and commercialization of
several foodstuffs, such as bread, biscuits, cupcakes, cakes, etc. and one of the
Plaintiff’s goods is a biscuit called “Milk Bikis Milk Cream”. The biscuit of the
plaintiff has a round shape on one side and a humorous face on the other.
Between both cookies, there’s a cream filling, a round nose, and a smile with
two teeth that are apparent and that both teeth are filled with cream.. The
applicant is the registered owner and also possesses the ‘Britannia Milk Bikis
Milk Cream’ copyright.
The complainant filed the case to note that the defendant had launched the
offending product as ‘Milk Wala’ which in all respects is comparable to the
complainant’s product. Thus, the defendant’s action is a pirate against the
design of the registered design, a breach of copyright, and transmission as of
the plaintiff, as it is identical in its design.

Judgment
The design and packaging characteristics of both the items are very different,
and young customers can immediately see the differences.
Conclusion
The registration of the Industrial Design shall protect the decorative or
aesthetic aspects of the product, and shall provide the holder or owner of the
registered design with exclusive rights against illegal use like the replication or
copying without the consent of such person.

9..Rights of patentee
Rights of Patentee – Section 48
The Patentee has the following rights:

• As the patent is for a product, the patent provides the exclusive right
to the Patentee to prevent third parties, from the act of making,
using, offering for sale, selling or importing for those purposes, that
product in India without the consent of the Patentee.
• The subject matter of a patent is a process, the exclusive right to
prevent the third party from the act of using that process of using,
offering for sale, selling or importing for those purposes without the
consent of the Patentee.

There are also other Rights of the Patentee which are conferred under the act
which is as follows:

• To exploit the patent: The owner of the patent has the right to
manufacture, sell, and distribute the patented article or item in
India. And if the invention is a procedure the Patentee has the right
to direct the procedure.
• To license the patent to another person (Sec 70): the owner of the
invention has the rights to assign or grant the license to other
individual and if it is a case of co-ownership then with the
 permission of the colleague, the individual can delegate the powers
of the patent to another individual.
• Right to surrender the patent(Sec 63): Patentee can surrender the
patent with the permission of the controller[7]. In such cases, the
controller generally advertises the patent and notify the interested
parties. When interested parties come to the controller and
controller finds the party condition suitable then the patent is
surrendered.
• Right before sealing: Section 24 says that the patent is sealed from
the date of notification for acceptance to the date of acceptance of
the notification.
• Right to apply for the patent of addition: This right has been
expressed in sections 54 and 56 of the act. This right allows the
Patentee to make modifications or changes in the existing invention
and the acceptance notification is also granted.
• Right to make convention application: A Patentee can apply for the
protection of his Patent in other countries.
• Right in case of infringement: Whenever the rights of Patentee are
infringed, Patentee has the right to move to the district court of
competent jurisdiction.
• Right to be issued for the duplicate patent: In case of theft or
damage of the original patent, the Patentee has the right to apply to
the controller for the duplicate patent.
• Right to be supplied copies and certificates: this right allows the
Patentee to be issued with copies of the patent which are certified,
after the payment of the fee by the Patentee.
When there are rights, there are certain limitations also. The Patent Act also
provides certain limitations on the exercise of the rights of the Patentee. The
limitations are:
• Government use of Patent: Section 100 of the act states that at any
time after the application for a patent had been filed or the patent
has been granted, the central government has the right to use the
invention for government purposes.
• Compulsory licenses
• Use of inventions for defence purposes
• Restored Patents
.

10.Terms of copy right

Term of Copyright
Copyright is protected for a limited time. Economic rights have a time limit,
which can vary according to national law. In those countries which are members
of the Berne Convention, the time limit should be equal to or longer than fifty
years after the creator’s death.
Longer periods of protection may, however, be provided at the national
level.3 For example, in Europe and the United States, the term of protection is
life plus seventy years.

Under the Indian Copyright Act, 1957, Chapter V enumerates the term of
copyright protection.
Section 22 of the Act states the term of copyright in published literary, dramatic,
musical and artistic works shall subsist, published within the lifetime of the
author, until sixty years from the beginning of the calendar year following the
year in which the author dies.

In this section, the reference to the author shall, in the case of a work of joint
authorship, be construed as a reference to the author who dies last.
However, in cases where the work falls under the category of a cinematograph
film, sound recording, photograph, posthumous publications 5, anonymous
organisations, the sixty years period is counted from the date of publication.

Term of Copyright for Posthumous Publications

it is the publication of work after the death of its author. The term of copyright
protection of a posthumous publication subsists for a period of sixty years and
unlike in others, here such period is calculated from the date of publication.

The United States Court of Appeals held in the case of Bartok v. Boosey &
Hawkes7that, “A “posthumous work” under section 24 of the Copyright Act is a
work on which the right to copyright has passed by will or intestacy due to the
absence of an effective assignment by the author during his lifetime.”

Term of Copyright for Anonymous Publication

If the publication of the work anonymously, that is, publication when the author
of such work is unknown. The copyright term of an anonymous publication, as
provided under Section 23 of the Copyright Act, 1957, is also for a period of sixty
years, calculated from the beginning of the calendar year next following the year
in which the work is first published.

The section also provides for the disclosure of the identity of the author. In its
proviso, it is provided that where the identity of the author is disclosed before
the expiry of the said period, the copyright exists for a period of sixty years,
calculated from the beginning of the calendar year next following the year in
which the work is first published.

The explanation clause to Section 23 of the Copyright Act, 1957 enumerates

about the position of the author, that is, here the identity of an author shall be
deemed to have been disclosed. The identity may be disclosed either publicly by
both the author and the publisher or is otherwise established to the satisfaction
of the Appellate Board by that author.

Term of Copyright for Photographs

While Section 22 contains terms of copyright for all other works, the term for
photographs has been set out separately in Section 25 of the Act. This is in
consonance with the Berne convention, which also arrays separate terms for
photographs and other works under Article 7.4 and Article 7.1 of the Berne
Convention (Paris text) respectively.
The Indian Copyright Act provides for copyright in a photograph for a period of
60 years from the beginning of the calendar year, following the year in which
the photograph is published. But this Section has been omitted by the
amendment of 2012.
Term of Copyright for Cinematograph Films
Copyright of Cinematograph Films9 shall subsist until sixty years from the
beginning of the calendar year next following the year in which the film is
published.
Term of Copyright for Sound Recordings
Copyright of sound recordings10 shall subsist until sixty years from the beginning
of the calendar year following the year in which the sound recording is
published.
Term of Copyright of government works
In the case of a Government work, where Government is the first owner of the
copyright therein, copyright subsists until sixty years from the beginning of the
calendar year next following the year in which the work is first published. 11
Term of Copyright where a public undertaking is the first owner
In the case of a work, where a public undertaking is the first owner of the
copyright therein, copyright subsists until sixty years from the beginning of the
calendar year next following the year in which the work is first published. 12
Term of Copyright of work of an international organisation
In the case of a work of an international organisation to which the provisions of
section 41 apply, copyright subsists until sixty years from the beginning of the
calendar year next following the year in which the work is first published.13
An author’s moral right as a right against distortion is available even after the
expiry of the term of copyright.

11.Geographical indication

What is Geographic Indication?

A geographical indication is a sign used on products that has a specific
geographic origin and includes the qualities or reputation of that origin.

A geographical indication is given mainly to agricultural, natural, manufactured,

handicraft arising from a certain geographical area. Geographical indications
(G.I.) are one of the forms of IPR which identifies a good as originating in the
respective territory of the country, or a region or locality in that particular
territory, where a given quality, reputation or other characteristic related to
good is essentially attributable to its geographical origin.

The relationship between objects and place becomes so well known that any
reference to that place is reminiscent of goods originating there and vice versa.
It performs three functions:

• First, they identify the goods as to the origin of a particular region or

locality;
• Secondly, they suggest to consumers that goods come from a region
where a given quality, reputation, or other characteristics of the goods
are essentially attributed to their geographic origin;
• Third, they promote the goods of producers of a particular region. They
suggest the consumer that the goods come from this area where a
given quality, reputation or other characteristics of goods are
essentially attributable to the geographic region.
•
G.I. is a kind of sign used for goods that have a specific geographical origin and
possess qualities or a reputation that are due to that particular place of origin.
Basmati rice and Darjeeling tea are examples of G.I. from India.

Article 22 of the TRIPS Agreements define a geographical indication as “signs

that originate in a member or identify a good location in an area or locality where
a given quality, reputation, or speciality is assigned to its geographical location
Is given Is essentially acceptable”.

As a result, India was implemented in 1999 when the TRIPS Agreement was
incorporated as a member state of the Sui-Genis law for the protection of
geographical Indication.

The object of the Geographical Indicators Goods (Registration and Protection)

Act, 1999, has three folds:

• By specific laws governing the geographical Indication of goods in the

country, which can adequately protect the interests of the producers
of such goods,
• To exclude unauthorized persons from misuse of geographical signals
and protect consumers from fraud, and
• Promoting Indian geographical bearing goods in the export market.
•
A registered geographic sign prohibits in any way the use of a geographical
insignia which indicates in the designation or representation of goods that such
goods originate in a geographic area.

For example, Basmati rice and Darjeeling tea are examples of G.I. from India.
The connection between the goods and place becomes so much recognized that
any reference to the place reminds those specific goods being produced there
and vice-versa.

Some of the Examples of Indian geographical indications which are registered

in India are:

• Basmati rice
• Darjeeling tea
• Banaras Brocades and Sarees
 • Coorg orange
• Phulkari
• Kolhapuri chappals
• Kanjeeivaram sarees
• Agra Petha

Need for Geographical indications

Given its commercial potential, G.I.’s legal protection assumes great
importance. Without proper legal protection, competitors who have no
legitimate authority over the G.I. can ride free on its reputation. Such unfair
trade practices lead to loss of revenue for G.I. right holders and also confuse
consumers.

Furthermore, such practices may ultimately disrupt the goodwill and reputation
associated with a geographical indication.

12.Copy right justice

Copyright Protection in India-

What is Copyright?

Copyright is an intellectual property right that law gives to a creator

of literary, dramatic, musical, and artistic work and a producer of
cinematograph films and sound recordings.

It also applies to architectural works and computer

program/software. It can be understood as a bundle of rights that
include the right of reproduction, communication, adaptation, and
translation of the work. Copyright ensures protection to the rights of
authors over their creations and in turn aims at rewarding creativity.

The Copyright Law in India

The Copyright Act, 1957 (Act) along with Copyright Rules, govern the
laws related to copyright protection in India.
Mere ideas, knowledge or concepts are not copyrightable. Having
said that copyright protects the original expression of information
and ideas.

Copyright can be claimed by either the creator or the person who

has inherited the rights of ownership from the original creator or an
agent who is allowed to act on behalf of the creator.

The Copyright Act provides an economic right to the author to

reproduce the work, to issue copies, to perform or communicate it to
the public, to make any cinematograph film or sound recording or to
make any adaptation or translation of the work.

The Act also provides a paternity right- right to claim authorship of

the work; an integrity right- right to protect one’s honor and
reputation and a general right- right to not have a work falsely
attributed to oneself. These moral rights remain with the author
even after assignment of the copyright.

When it comes to enforcement,

Copyright Board used to adjudicate certain cases pertaining to

copyright, however with the passing of the Finance Bill in 2017, the
board was dissolved, and its functions were transferred to the
Intellectual Property Appellate Board (IPAB). Subsequently, the
IBAP was abolished in 2021, and powers were finally transferred to
Commercial Courts (a division of High Courts).

Registration
India being a signatory to the Berne Convention for the Protection of
Literary and Artistic Works, 1886 (Berne Convention), is obligated to
give equal protection to the works originating not only in India but
also outside India in any of the contracting states.

It is an important principle of the Berne Convention that the

registration of copyright is not mandatory, in India too it is not
mandatory for one to register a copyright for availing the protection
of law. Consequently, the Copyright Act 1957 also does not mandate
registration.

Time Period

In case of original literary, dramatic, musical, and artistic works the

time period of copyright in India is 60 years in addition to the
author’s lifespan.

Where there are multiple authors, the term is 60 years post the
death of the last author.

For cinematograph films, sound recordings, photographs,

posthumous publications, anonymous and pseudonymous
publications, works of government and works of international
organizations, Copyright protection subsists for a period of 60 years
from the year of publication.

In case of unpublished Cinematograph films, Photographs, and

computer programs the copyright subsites up to 60 years from the
year in which the original work was created.

Copyright for Sound recordings is valid for 60 years from the end of
the year in which that sound recording is published for the first time.

Broadcast reproduction rights are valid for 25 years from the year of
broadcast and performers rights last for 50 years from the year the
performance was made.

13.Difference between Passing Off and

trademark infringement.
1. Trademark provides protection to registered goods and
services whereas Passing Off provides protection to
unregistered goods and services. This is one of the most
 important differences between Passing Off and trademark
infringement.
2. But the point to be noted here is that the remedy provided
in both Passing Off and trademark infringement is the same.
3. The other difference between Passing Off and trademark
infringement is that in Passing off it is not essential for the
defendant to use the trademark of the plaintiff to bring an
action of passing off but in trademark infringement, it is not
the case.
4. In the case of trademark infringement, the burden of proof
lies on the plaintiff.
5. Passing off is a common law remedy whereas Trademark
infringement is a statutory remedy.
6. For trademark infringement prosecution under criminal
remedy is quite easy as compared in the case of Passing off.
7. For the case of Passing off, the remedy has to be sought
under Section 20 of Civil procedure code 1908, whereas
trademark infringement suits can be solved under Section
134 of the Trademarks Act 1999.
8. For trademark infringement registration is essential
whereas for passing off Goodwill, damage,
misrepresentation is essential.
There are two famous cases for the difference between trademark
infringement and passing off which are stated below:

The distinction between these two was stated by judge Clauson in the
case of Listen LTD. v/s Harley. (4) In this case, he opined that if you
are restraining the infringement of a registered mark, you can
restraint the man from using the mark, but if you restraint him from
selling the article under the same label word which plaintiff or other
person has been using without differentiating it from the Plaintiff’s
good, then it is a different thing.
Another case is S. Syed Mohideen v. P. Sulochana Bai. (5) In this case,
both the appellant and respondent were the registered owner
of ‘Irrutukadai Halwa’ but the respondent proved in the Supreme
Court that it is not just about the use of trademark but it has become
a household name for her family as they have been selling this halwa
since the 1990s and have a different reputation to which court said
that as it has become the Goodwill of respondent thus no one can use
this particular trademark and it was also observed that passing off
right is a broader remedy than trademark.